Ex Parte Hwang et al

Patent Trial and Appeal Board

Mar 26, 2014

12036488 (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SUNG-HEE HWANG,
JUNG-WAN KO, and KYUNG-GEUN LEE1
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Appeal 2011-012765
Application 12/036,488
Technology Center 2600
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Before JASON V. MORGAN, LARRY J. HUME, and
LINZY T. McCARTNEY, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL2
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Samsung Electronics Co., Ltd., is the Real Party in Interest. App. Br. 4.
2 An oral hearing for this appeal was held March 18, 2014.
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Invention
Appellants invented “[a]n information recording medium, a
recording/reproducing method and apparatus, and a host apparatus . . .
provided to ensure compatibility between information recording media
having functions of a new standard and existing standard drive systems.”
Abstr.
Exemplary Claims
Claims 1 and 4, reproduced below with key limitations emphasized,
are representative:
1. A recording/reproducing apparatus for recording data on or
reproducing data from an information recording medium, the
recording/reproducing apparatus comprising:
a writing/reading unit to read access control data from an
access control area of the information recording medium, the
information recording medium comprising a lead-in area and a
data area, the lead-in area comprising a defect management area
to store defect management information, the lead-in area further
comprising the access control area to store the access control
data, the defect management area and the access control area
being different areas of the lead-in area; and
a control unit to determine whether reinitialization of the
information recording medium is permitted based on the access
control area and information indicating whether a write inhibit
hole formed in a cartridge containing the information recording
medium is open or closed;
wherein the access control area comprises at least one
access control data regarding at least one recognizable
function that is recognizable by the recording/reproducing
apparatus, and at least one access control data regarding at least
one unrecognizable function that is not recognizable by the
recording/reproducing apparatus;
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all of the at least one access control data regarding all of
the at least one unrecognizable function include formatability
information;
all of the at least one access control data regarding all of
the at least one recognizable function include formatability
information;
the control unit checks whether the write inhibit hole of
the cartridge is closed;
when the write inhibit hole of the cartridge is closed, the
control unit checks whether the formatability information
included in all of the at least one access control data regarding
all of the at least one unrecognizable function is set to permit
the reinitialization of the information recording medium;
when the formatability information included in all of the
at least one access control data regarding all of the at least one
unrecognizable function is set to permit the reinitialization of
the information recording medium, the control unit checks
whether the formatability information included in all of the at
least one access control data regarding all of the at least one
recognizable function is set to permit the reinitialization of the
information recording medium; and
when the formatability information included in all of the
at least one access control data regarding all of the at least one
recognizable function is set to permit the reinitialization of the
information recording medium, the control unit determines that
the reinitialization of the information recording medium is
permitted.
4. The recording/reproducing apparatus of claim 1, wherein
every access control data regarding every recognizable
function on the information recording medium includes
formatability information; and
every access control data regarding every unrecognizable
function on the information recording medium includes
formatability information.
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Rejection
The Examiner rejects claims 1-14 under 35 U.S.C. § 103(a) as being
unpatentable over Sasaki (US 2003/0223338 A1; Dec. 4, 2003), Weirauch
(US 2001/0048659 A1; Dec. 6, 2001), and Ko (EP 1306840 A2; May 2,
2003). Ans. 5-13.

ISSUES
1. Did the Examiner err in finding the combination of Sasaki,
Weirauch, and Ko teaches or suggests a recording/reproducing apparatus for
recording data on or reproducing data from an information recording
medium having an access control area comprising “at least one access
control data regarding at least one recognizable function that is recognizable
by the recording/reproduction apparatus,” wherein:
(1) “all of the at least one access control data regarding all of
the at least one recognizable function include formatability
information;”
(2) a control unit determines that reinitialization of the
information recording medium is permitted “when the formatability
information included in all of the at least one access control data
regarding all of the at least one recognizable function is set to permit
the reinitialization of the information recording medium;”
(3) “the control unit checks whether the write inhibit hole of the
cartridge [containing the information recording medium] is closed;”
and
(4) the control unit (a) checks the write inhibit hole of the
cartridge, the formatability information regarding all of the at least
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one unrecognizable function, and the formatability information
regarding all of the at least one recognizable function and (b)
determines reinitialization of the information recording medium is
permitted, in the sequence recited in claim 1?
2. Did the Examiner err in finding that the combination of Sasaki,
Weirauch, and Ko teaches or suggests a recording/reproducing apparatus for
recording data on or reproducing data from an information recording
medium “wherein every access control data regarding every recognizable
function on the information recording medium includes formatability
information,” as recited in claim 4?
ANALYSIS
Claims 1-3, 5, 7, 8, and 10-14
We note at the outset that representative claim 1 is directed to “[a]
recording/reproducing apparatus for recording data on or reproducing data
from an information recording medium, the recording/reproducing
apparatus comprising . . . ” (emphases added). While claim 1 recites
features of the type of information recording medium that the
recording/reproducing apparatus is capable of operating using (i.e.,
recording data on or reproducing data from), the information recording
medium is not itself recited as part of the recording/reproducing apparatus.
Thus, recited features of the information recording medium that may be used
in the claimed recording/reproducing apparatus are, in effect, directed to an
intended use for the claimed recording/reproducing apparatus. That is, the
claimed recording/reproducing apparatus is merely intended to be used with
an information recording medium having the recited features.
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“An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
“[s]uch statements often . . . appear in the claim’s preamble,” a statement of
intended use or purpose can appear elsewhere in a claim. In re Stencel, 828
F.2d 751, 754 (Fed. Cir. 1987). Thus, the recitations regarding the
information on an information recording medium that the recording/
reproducing apparatus is intended to operate on do not distinguish over the
prior art to the extent the prior teaches or suggests a recording/reproducing
apparatus capable of operating on such an information recording medium.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We find it is
sufficient that the Examiner’s findings show the prior art teaches or suggests
a recording/reproducing apparatus capable of operating on an information
recording medium having the recited features.
Claim 1 recites “all of the at least one access control data regarding all
of the at least one recognizable function include formatability information.”
Claim 1 also recites a control unit that checks this formatability information
and determines that that reinitialization of the information recording medium
is permitted “when the formatability information included in all of the at
least one access control data regarding all of the at least one recognizable
function is set to permit the reinitialization of the information recording
medium.” The Examiner correctly finds that Weirauch’s teaching of an
Access Control (AC) Disk Control Block (DCB) that includes a “No format”
access control specification teaches or suggests a recording/reproducing
apparatus that checks access control data regarding a recognizable function
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for formatability information (i.e., checking the AC DCB) and determines
reinitializing the information (i.e., formatting) is permitted only if the
formatability information is set to permit reinitialization (i.e., “No
formatting” is not set). Ans. 15; see also Weirauch ¶¶ 0021, 0025.
Appellants contend the Examiner erred because Weirauch “states that
‘[t]he proposed standard specifies that every compatible medium must write
one GM-DCB [General Media DCB].’” Reply Br. 9 (citing Weirauch
¶ [0014]). Appellants argue that the Weirauch GM-DCB represents a
recognizable function that does not have formatability information. App. Br.
21-22; Reply Br. 8-10. Therefore, Appellants contend, “Weirauch does not
disclose the feature ‘all of the at least one access control data regarding all of
the at least one recognizable function include formatability information,’” as
recited in claim 1. Reply Br. 9-10.
Appellants’ arguments are not persuasive of error because they are
directed to recitations regarding content of the information recording
medium—recitations that, as discussed above, are not entitled to patentable
weight and thus do not distinguish over the prior art. Furthermore,
Appellants’ arguments are not commensurate with the scope of the claim
recitations. As the Examiner correctly notes, the claim 1 recitations of “all
of the at least one access control data regarding all of the at least one
recognizable function include formatability information” and checking such
access control data merely requires the information recording medium have
access control data regarding at least one recognizable function (e.g., a
subset of the recognizable functions on the information recording medium).
Ans. 17-18. Appellants dispute this claim construction. Reply Br. 6.
However, claim 1 uses open-ended “comprising” language combined with
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the limitations directed to “at least one access control data” and “at least one
recognizable function” in describing the content of information recording
medium on which the recording/reproducing apparatus is intended to operate
(emphases added). Moreover, dependent claim 4 recites, “wherein every
access control data regarding every recognizable function on the information
recording medium includes formatability information” (emphases added).
Thus, both the broad language of claim 1 and the doctrine of claim
differentiation support the Examiner’s broad, but reasonable, claim
construction.
Therefore, we agree with the Examiner that the combination of
Sasaki, Weirauch, and Ko teaches or suggests a recording/reproducing
apparatus for recording data on or reproducing data from an information
recording medium having an access control area comprising “at least one
access control data regarding at least one recognizable function that is
recognizable by the recording/reproduction apparatus,” wherein: (1) “all of
the at least one access control data regarding all of the at least one
recognizable function include formatability information” and (2) a control
unit determines that reinitialization of the information recording medium is
permitted “when the formatability information included in all of the at least
one access control data regarding all of the at least one recognizable function
is set to permit the reinitialization of the information recording medium,” as
recited in claim 1. Ans. 7-8, 14-15.
The Examiner further finds that Ko’s teaching of a write inhibit hole
teaches or suggests “the control unit checks whether the write inhibit hole of
the cartridge [containing the information recording medium] is closed,” as
recited in claim 1. Ans. 9. Appellants contend the Examiner erred because
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“Ko only discloses using the write inhibit hole with regard to write
protection, and discloses nothing whatsoever about using the write inhibit
hole in determining whether reinitialization is permitted.” App. Br. 30; see
also Reply Br. 16. However, the Examiner correctly finds that
“[r]einitialization necessarily involves writing to the disc and therefore
anything that prohibits writing to the disc clearly prohibits reinitialization.”
Ans. 21. The Examiner also correctly finds use of write inhibit holes has
“been a standard feature of disc drives for decades and is extremely well
understood. Certainly one of ordinary skill would understand how to
combine these elements.” Id. Therefore, we agree with the Examiner that
the combination of Sasaki, Weirauch, and Ko teaches or suggests a
recording/reproducing apparatus for recording data on or reproducing data
from an information recording medium, wherein a “control unit checks
whether the write inhibit hole of the cartridge [containing the information
recording medium] is closed.” Id. at 9.
Appellants further contend the Examiner erred because “Sasaki, Ko,
and Weirauch do not disclose or suggest the . . . specific sequence of
operations recited in claim 1.” App. Br. 31; see also Reply Br. 18-19. In
this sequence, the control unit checks the write inhibit hole, then the
formatability information regarding all of the at least one unrecognizable
function, and then the formatability information regarding all of the at least
one recognizable function in a particular sequence before determining
reinitialization of the information recording medium is permitted. App. Br.
31-32. Appellants argue, “the Examiner has not explained what would have
led one of ordinary skill in the art to combine Sasaki, Ko, and Weirauch to
perform these four operations in the order they are recited.” Reply Br. 18.
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The checks and determination recited amount to a test for three
separate conditions, all of which must be met, for the control unit to
determine reinitialization of the information recording medium is permitted.
An artisan of ordinary skill would recognize testing of the three conditions
that must all be met would take place before the final determination is made.
Thus, the issue is whether a control unit that uses the recited order of the
three tests would have been obvious to an artisan of ordinary skill.
For sequential testing, there are only six permutations of these three
tests, and thus only six possible sequences in which these tests could be
performed. The prior art teaches or suggests each of these three tests and the
use of their results to determine whether reinitialization is permitted. Thus,
there would have been a finite number of identified, predictable sequential
testing solutions within the technical grasp of an artisan of ordinary skill.
Therefore, the anticipated success of a control unit that uses the particular
sequence claimed does not represent innovation, but merely the application
of ordinary skill and common sense. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
Therefore, we agree with the Examiner that the combination of
Sasaki, Weirauch, and Ko teaches or suggests a recording/reproducing
apparatus for recording data on or reproducing data from an information
recording medium, wherein a control unit (a) checks the write inhibit hole of
the cartridge, the formatability information regarding all of the at least one
unrecognizable function, and the formatability information regarding all of
the at least one recognizable function and (b) determines reinitialization of
the information recording medium is permitted, in the sequence recited in
claim 1.
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and of claims 2, 3, 5, 7, 8, and 10-14, which are not argued
separately with sufficient specificity. App. Br. 32-37.
Claims 4, 6, and 9
Claim 4 recites “wherein every access control data regarding every
recognizable function on the information recording medium includes
formatability information.” Appellants contend the combination of Sasaki,
Weirauch, and Ko does not teach or suggest this recitation, arguing that
Weirauch discloses an information recording medium that must have a GM-
DCB, which Appellants contend represents a recognizable function without
formatability information. App. Br. 34-35; Reply Br. 20-21.
As discussed above, this recitation is directed to features of the
information recording medium, and thus it is not entitled to patentable
weight. Furthermore, whether the GM-DCB represents a recognizable
function or an unrecognizable one depends on the capabilities of the
recording/reproducing apparatus relative to the standard to which the
particular information recording medium being operated on conforms. As is
apparent from the prior art, an artisan of ordinary skill would have
recognized the standards for information recording media are fluid. It is
expected that a recording/reproducing apparatus will be able to operate using
information recording media that conform to newer, evolving standards.
Moreover, it is expected that when a new information recording media
standard is introduced, existing recording/reproducing apparatuses may not
recognize the new standard.
This fluidity is illustrated in Weirauch’s teaching that the GM-DCB
contains an Unknown Content Descriptors Actions (UDCA) entry.
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Weirauch Fig. 3; ¶¶ 0018-19. A recording/reproducing apparatus that does
not recognize the GM-DCB would use the UDCA entry to determine if
reformatting is disabled. Id. ¶ 0032. Weirauch further notes that the actual
list and order of entries in the GM-DCB “may change as the standard is
defined.” Id. ¶ 0019. Thus, an artisan of ordinary skill would have
recognized that even the standard taught by Weirauch would have been
subject to revision such that a recording/reproducing apparatus may not
recognize later versions of the GM-DCB that may be defined. In such an
event, a recording/reproducing apparatus designed to operate using an
information recording medium conforming to the standard disclosed in
Weirauch would use the UDCA entry of the unrecognizable newer version
of the GM-DCB. Only the formatability information regarding the
remaining recognizable functions would affect the claimed test of
formatability information regarding every recognizable function. Therefore,
Appellants’ argument that Weirauch teaches the inclusion of a GM-DCB is
not persuasive of error. We agree with the Examiner that the combination of
Sasaki, Weirauch, and Ko teaches or suggests a recording/reproducing
apparatus for recording data on or reproducing data from an information
recording medium “wherein every access control data regarding every
recognizable function on the information recording medium includes
formatability information,” as recited in claim 4. Ans. 11.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 4, and of claims 6 and 9, which Appellants do not argue separately.
App. Br. 34-35.

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DECISION
We affirm the Examiner’s decision to reject claims 1-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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